February 2018

02/16/2018

This paper will present an overview of some of the issues pertaining to the disposition of patent rights to inventions made under a government R&D contract. As will be seen, without careful adherence to the statutes and regulations governing such patent rights, it is possible for a contractor to unintentionally lose or waive these valuable rights.

In 1980, Congress implemented chapter 18 of 35 United States Code (USC), which is titled “Patent Rights in Inventions Made with Federal Assistance” (“the Law”). The Law originally applied to only small business firms and nonprofit organizations. However in 1983, President Ronald Reagan issued a “Memorandum on Government Patent Policy” extending the benefits of the Law to all R&D contractors, including large businesses and for-profit organizations.

02/13/2018

-Granted patents provide a monopoly for the claimed invention. A patent holder can stop another from making, selling, using or importing a product, method, widget, composition of matter, etc. that meets every word of a patent claim.

-A patent is a property right. Venture Capital firms look for potential investment targets to have a patent portfolio to demonstrate that the value of the startup is more than just the composition of the target’s leadership team. The ability to protect a startup’s core IP is essential.